Patents

Deemed Abandonment of Patent Application

Gaurav Mishra · · 6 min read

A stylised wall calendar showing a weekend gap between two working days, with a patent document sitting just beyond the ticking hand of a clock. Communicates the razor-thin timing dispute at the heart of the case. Featured image for: Deemed Abandonment of Patent Application

Summary

M/S Shiv Nadar (Institution of Eminence Deemed to be University) (“Shiv Nadar University”) appealed before the Delhi High Court after its patent application for a glycoside-based anti-toxin invention was deemed abandoned by the Assistant Controller of Patents and Designs (“Controller”) under Section 21(1) of the Patents Act. The abandonment followed a four-day delay in filing a reply to the First Examination Report, two of which fell on a weekend. The Delhi High Court set aside the Controller's order, holding that the university's conduct showed diligence rather than any intent to abandon the application. This ruling on deemed abandonment reinforces that courts, unlike the Controller, retain discretion to excuse marginal procedural delays where genuine prosecution intent is evident, giving patent applicants a measure of comfort against harsh mechanical enforcement of Section 21(1).

Background

A four-day gap in paperwork, two of those days a weekend, was enough for the patent office to treat a five-year-old patent application as abandoned. The Delhi High Court’s intervention in this dispute on deemed abandonment tests how much room the law leaves for genuine, diligent applicants when statutory deadlines brush up against a holiday calendar.

M/S Shiv Nadar (Institution of Eminence Deemed to be University) (“Shiv Nadar University”), a not-for-profit deemed university established in 2011, filed Patent Application No. 201811034958 on 17 September 2018 for an invention titled “Glycoside Based Anti-Toxin for Epsilon Intoxication and Preparation Method Thereof.” The Assistant Controller of Patents and Designs (“Controller”) issued a First Examination Report (“FER”) on 10 May 2022. Shiv Nadar University sought and received an extension to file its reply, with the deadline set at 10 February 2023. The reply, approved internally on the last day of that deadline, reached the university’s patent agent only after office hours, and with 11 and 12 February falling on a weekend, was filed on 14 February 2023, four days after the extended deadline. A hearing notice followed on 22 December 2023, a hearing was held on 12 January 2024, and on 29 January 2024 the Controller deemed the application abandoned under Section 21(1) of the Patents Act, 1970 (“Patents Act”) for failure to respond to the FER within the prescribed period. Shiv Nadar University challenged this order before the Delhi High Court under Section 117A of the Patents Act.

Issues

    • Whether the four-day delay in filing the FER reply, occurring after an already-extended deadline, reflected an intent on Shiv Nadar University’s part to abandon Patent Application No. 201811034958 under Section 21(1) of the Patents Act.
    • Whether the Assistant Controller of Patents and Designs possesses discretion under Section 21(1) to condone delay in filing a response to a First Examination Report, or whether that power vests only in a court.
    • Whether the deadline to respond to an FER, once extended, falls within the category of extendable or non-extendable statutory deadlines under the Patents Act.

Shiv Nadar University’s Arguments

    • The delay of four days, encompassing a weekend, did not reflect any intent to abandon an application in which the university had invested resources since 2018, particularly given its consistent diligence in prosecuting the application.
    • The reply was approved on the last day of the extended deadline but could not be filed the same day since it reached the patent agent after office hours, with the following two days being a weekend, and was filed on the next working day.
    • Relying on European Union v. Union of India, 2022 SCC OnLine Del 1793, and Ferid Allani v. Union of India, 2008 SCC OnLine Del 1756, the university argued that Delhi High Court precedent permits condonation of delay in filing FER replies where there was no intent to abandon.
    • Deemed abandonment under Section 21(1) deprives an applicant of valuable rights that would otherwise accrue under Section 48 of the Patents Act, and the 161st Report of the Department-Related Parliamentary Standing Committee on Commerce, dated 23 July 2021, had flagged the harshness of the deemed abandonment provision.

Controller’s Arguments

    • The impugned order suffered from no infirmity since the reply to the FER was admittedly not filed within the statutorily prescribed period, including the extended deadline granted to the university.
    • The Controller has no power or discretion under Section 21(1) of the Patents Act to condone delay in filing a response to an FER, regardless of the applicant’s intent.

Court’s Analysis

Extendable and Non-Extendable Deadlines

The court observed that the Patents Act, read with the Patent Rules, prescribes deadlines of two distinct kinds: those that can be extended and those that cannot. The court noted that non-extendable deadlines typically include national phase entry, filing a request for examination, and putting an application in order for grant, categories that patent agents are expected to know and track. The court found that a reply to an FER, once an extension has been granted, falls outside the strictly non-extendable category. The court relied on the reasoning in European Union v. Union of India, where the Delhi High Court had condoned delays of almost a year in filing FER replies on the ground that there was no intention to abandon the applications concerned. The court also drew on Ferid Allani v. Union of India, noting that deemed abandonment strips an applicant of valuable rights that would otherwise flow under Section 48 of the Patents Act, a consequence too severe to apply mechanically. Deemed abandonment of a patent application, the court observed, is not meant to punish inadvertent, marginal delays where the applicant’s conduct shows continued engagement with the prosecution process.

Reading Diligence Into the Record

The court examined the complete prosecution history of Patent Application No. 201811034958 and observed that Shiv Nadar University had filed its request for examination on time, promptly sought an extension when it could not meet the original FER deadline, and secured that extension well before it lapsed. The court held that the university’s reply was approved internally on the very last day of the extended deadline, and that the ensuing four-day delay, two of which fell on a non-working weekend, could not be equated with negligence or an intent to abandon. The court further observed that negligence of a patent agent or a visible lack of follow-up by an applicant are the kinds of circumstances that would justify an inference of abandonment, and found neither present on this record. The court reasoned that an applicant who has invested five years of time, effort, and resources into securing a patent is unlikely to deliberately let the application lapse for the sake of a few days. On the Controller’s submission that Section 21(1) confers no discretion to condone delay, the court agreed that the Controller lacks such power, but stated that this constraint does not bind a court exercising its own jurisdiction under Section 117A. The court opined that the absence of departmental discretion cannot foreclose judicial examination of whether deemed abandonment was, on the facts, a fair characterisation of the applicant’s conduct.

Findings

In view of the observations and the arguments presented by both the parties, the Delhi High Court held that:

    • Shiv Nadar University’s conduct in prosecuting Patent Application No. 201811034958 did not show negligence or an intent to abandon the application.
    • The four-day delay in filing the reply to the FER, arising after an already-extended deadline and overlapping a weekend, did not warrant treating the application as abandoned under Section 21(1) of the Patents Act.
    • The impugned order dated 29 January 2024 deeming the application abandoned is set aside.
    • Patent Application No. 201811034958 is restored to its original position preceding the deemed abandonment.
    • The Assistant Controller of Patents and Designs is directed to take the reply to the FER on record and proceed to examine the application in accordance with law, without any expression of opinion on its merits.

Case Citation: M/S Shiv Nadar (Institution of Eminence Deemed to be University) v. The Assistant Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 33/2024, Delhi High Court, decided on 23 April 2026. Available at http://indiankanoon.org/doc/62467493/

Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels

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